Scoop on TM Rights Protection in new gTLDs - RE: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT Report and Applicant Guidebook Version 3

[Liz Williams]

Zahid

Thanks very much for this analysis.  It is always disturbing when  
months of community time and organisational resources are of  
questionable value.  It also points again to the difficulty of trying  
to do what is essentially policy development outside of the normal  
policy development channels but that is a debate for another day.

However, what is your suggestion for a way forward?  You make a  
"scream about it" note at the end but that most likely won't be very  
productive.  It seems to be that the Board is going to be required to  
be the final decision maker given it is highly unlikely that the  
Council will reach consensus -- given that lack of consensus was the  
whole reason why the IRT was established anyway.

Following Ron's request for items for tonight's meeting, I suggest  
that the strategy forward is the subject of tonight's huddle at 6pm in  
the bar.  Gin and tonic will be required!

Liz
On 25 Oct 2009, at 02:10, Zahid Jamil wrote:

> This document was prepared for a meeting held yesterday between the  
> IRT and Staff (Kurt, Dan) and a Board Member (Bruce).
>
> Here are some points that may interest members:
>
> The outcome from Staff in the DAG3 (http://www.icann.org/en/topics/new-gtlds/dag-en.htm 
> ) and those mentioned on
> for Rights Protection Mechanism (http://www.icann.org/en/public-comment/#prpm-new-gtlds 
>  -difficult to find on the website and not connected to the DAG3’s  
> website) DO NOT REFLCT the IRT Recommendations.
>
> It seems that the Staff has completely reengineered the solutions.    
> To a large extent even though the title of the solution may be the  
> same but the contents are effectively not what the IRT recommended.
>
> So to give members a feel of the process and what Staff acknowledged  
> in yesterday’s meeting:
>
> Focusing on 5 Solutions:
> 1.       Reserved List (GPML)
> 2.       Central IP Database (IP Clearinghouse)
> 3.       Rapid Suspension (URSS)
> 4.       Rights holders right to take a Registry through a Dispute  
> Resolution after the gTLD is launched (Post Delegation Dispute  
> Resolution Procedure PDDRP)
> 5.       Thick Whois
>
> Eg. 1 - So for instance, in regards PDDRP:
>
> There were no comments from the community
> The Board agreed at the higher level to a PDDRP
>
> In my view this would have mean that Staff would go ahead and  
> incorporate the IRT solution (maybe just maybe filling in some  
> holes) into DAG3 or the Rights Protection Mechanism.  This wasn’t  
> the case.
>
> Instead the staff completely changed the PDDRP (see Jeff Neuman’s  
> article http://www.circleid.com/members/2921/ )
>
> So as I put in the meeting yesterday Staff swapped the cards on the  
> IRT, the community, and the Board!
>
> (But since this was too tricky they didn’t let this go to the GNSO)
>
> In short the IRT had recommended that:
>
> Standard for Asserting a Claim – 3
> types:
> (a) The Registry Operator’s manner
> of operation or use of a TLD is
> inconsistent with the
> representations made in the TLD
> application as approved by
> ICANN and incorporated into the
> applicable Registry Agreement
> and such operation or use of the
> TLD is likely to cause confusion
> with the complainant’s mark; or
> (b) The Registry Operator is in
> breach of the specific rights
> protection mechanisms
> enumerated in such Registry
> Operator’s Agreement and such
> breach is likely to cause
> confusion with complainant’s
> mark; or
>
>
>
>
>
>
>
>
>
>
>
>
> (c) The Registry Operator manner of operation or use of the TLD  
> exhibits a bad faith intent to profit from the systemic registration  
> of domain name registrations therein, which are identical or  
> confusingly similar to the complainant’s mark, meeting any of the  
> following conditions: (i) taking unfair advantage of the distinctive  
> character or the reputation of
> the complainant’s mark, or (ii) unjustifiably impairing the  
> distinctive character or the
> reputation of the complainant’s mark, or (iii) creating an  
> impermissible likelihood of
> confusion with Complainant’s mark.
>
>
> For a Registry Operator to be liable for toplevel
> infringement, a complainant must assert
> and prove by clear and convincing evidence
> that the Registry Operator’s affirmative
> conduct in its operation or use of its gTLD, that is identical or  
> confusingly similar to the
> complainant’s mark, causes or materially
> contributes to the gTLD: (a) taking unfair
> advantage of the distinctive character or the
> reputation of the complainant’s mark, or (b)
> unjustifiably impairing the distinctive character
> or the reputation of the complainant’s mark, or
>
>
>
>
>
>
>
>
> (c) creating an impermissible likelihood of
> confusion with the complainant’s mark.
> For a Registry Operator to be liable for the
> conduct at the second level, the complainant
> must assert and prove by clear and convincing
> evidence:
>
> (a) that there is substantial ongoing
> pattern or practice of specific bad faith intent
> by the registry operator to profit from the sale
> of trademark infringing domain names; and
>
>
>
> (b) of the registry operator’s bad faith intent to profit from the  
> systematic registration of
> domain names within the gTLD, that are
> identical or confusingly similar to the
> complainant’s mark, which: (i) takes unfair
> advantage of the distinctive character or the
> reputation of the complainant’s mark, or (ii)
> unjustifiably impairs the distinctive character or the reputation of  
> the complainant’s mark, or (iii) creates an impermissible  
> likelihood of
> confusion with the complainant’s mark. In this
> regard, it would not be nearly enough to show
> that the registry operator was on notice of
> possible of trademark infringement through
> registrations in the gTLD.
>
> So basically if a Rights holder or a community that doesn’t object  
> at the application stage since the representations in the  
> Application and the Registry Agreement seem fine has no recourse  
> subsequently to assert and challenge in case there is a breach of  
> the Registry Agreement or those representations in the application.
>
> ICANN staff’s response was:  we will independently deal with  
> enforcement brought to our notice.  Basically trust us to enforce  
> Registry contracts.
>
>
> Eg. 2 - In regards the URSS:
> ICANN staff has changed the Rapid Suspension from MANDATORY to BEST  
> PRACTICE
>
> Also delinked URSS from the GPML and Clearing House “The Guidebook  
> proposal does not mention a pre‐registration process utilizing the  
> Clearinghouse”
>
> And since the Board was advised that this seems more like Policy the  
> Board has sent a letter to the GNSO to either:
>
> a) approve the staff model (details of which can be found here http://www.icann.org/en/topics/new 
> ‐gtlds/gnso‐consultations‐reports‐en.htm), which is an  
> assimilation of the IRT work and Board concerns), or
> b) propose an alternative that is equivalent or more effective and  
> implementable.
>
> A six weeks window has been allowed.
>
> This basically means that if GNSO cannot reach consensus then Staff  
> Model is likely to go through
>
>
> The IRT proposals thus have been side tracked and swapped.
>
>
> Example 3 – Reserved List (GPML)
> It’s just gone – Staff had said that they would complete their  
> research (about strongest global brands- get data about global  
> brands and see how many countries these brands are registered in)  
> and then come back – but the GPML was just removed – no  
> explanation and without completing this study.
> SO NO RESERVED LIST – AND NO SOLUTION TO DEFENSIVE REGISTRATIONS!
>
>
> Generally:
>
> In response to protestations Kurt said in regards some aspects  
> ‘you’re preaching to the converted’  and generally said ‘go  
> ahead and scream about it’ – basically do what the Non  
> commercials are doing.
>
>
>
>
>
>
>
> Similarly
>
>
>
>
>
>
>
>
>
> Sincerely,
>
> Zahid Jamil
> Barrister-at-law
> Jamil & Jamil
> Barristers-at-law
> 219-221 Central Hotel Annexe
> Merewether Road, Karachi. Pakistan
> Cell: +923008238230
> Tel: +92 21 5680760 / 5685276 / 5655025
> Fax: +92 21 5655026
> www.jamilandjamil.com
>
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> From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On  
> Behalf Of Mike Rodenbaugh
> Sent: Sunday, October 25, 2009 7:19 AM
> To: bc-gnso at icann.org
> Subject: [bc-gnso] FW: [Bulk] [gnso-sti] Draft Summary of  
> Differences Between IRT Report and Applicant Guidebook Version 3
>
> Further fyi, re STI (“Specified TM Issues”).
>
> Mike Rodenbaugh
> RODENBAUGH LAW
> 548 Market Street
> San Francisco, CA  94104
> (415) 738-8087
> http://rodenbaugh.com
>
> From: owner-gnso-sti at icann.org [mailto:owner-gnso-sti at icann.org] On  
> Behalf Of Margie Milam
> Sent: Saturday, October 24, 2009 6:01 PM
> To: Council GNSO; gnso-sti at icann.org
> Subject: [Bulk] [gnso-sti] Draft Summary of Differences Between IRT  
> Report and Applicant Guidebook Version 3
>
> Dear All,
>
> As we discussed yesterday,  attached is  a document that summarizes  
> the key differences between the IRT and the Applicant Guidebook  
> Version 3.   This matrix seeks to succinctly present areas of  
> contrast and briefly explain the rationale for the differences.     
> Please review this draft  and let me know  whether there is any  
> other information that should be included to facilitate the GNSO’s  
> work on the Board request.
>
> Best regards,
>
> Margie Milam
> Senior Policy Counselor
> ICANN
>

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